An ineffective Enforcement strategy means loss of value to your organization, while also encouraging potential and current infringers. On the other hand, a well-run Enforcement strategy sets clear boundaries with potential infringers and earns respect in your market place. IP Enforcement: New York explores, benchmarks and challenges the enforcement strategies that Operating Companies are implementing, how they can be improved and where current trends are heading. Most importantly, the conference looks at how these Enforcement strategies can fit into your organization’s goals and larger IP strategy.
KEY TOPICS DISCUSSED
Patent Prosecution: Producing Enforceable Patents
Preparing For Enforcement & Litigation
Going To Trial: Enforcement Focused Strategies
Surviving The Patent Killer: Navigating Post Issuance Proceedings
Managing Litigation Costs
How will infringers defend themselves?
Chief IP Counsel
VP & Director of IP Strategy
Chief, Deputy and Associate General Counsel
Intellectual Property, Trademark and Copyright Counsel
Head of Litigation
Director of Business and Legal Affairs
Director/VP of Intellectual Property
Director/VP of Licensing
VP & Director of Intellectual Asset Management
Catherine Toppin is Senior Patent Counsel and Manager with the Global Patent Operation (GPO) of General Electric. She manages a team of attorneys, patent agents, and paralegals within the GPO. Her substantive legal practice focuses primarily on the strategic development and procurement of electrical, mechanical and software patent portfolios. She was recently appointed as acting IP Counsel for a $2.7 B business within the Energy Management Division of GE.
Prior to GE, Catherine worked as an associate in the Intellectual Property department of Boston-based general practice firm, handling a mix of patent preparation, prosecution, due diligence and IP litigation support matters. She also has experience as a Patent Examiner with the United States Patent and Trademark Office. Catherine graduated with a BSE in electrical engineering from Princeton University, and earned her JD from the University of Maryland, Baltimore School of Law.
Outside of work, Catherine is an active Princeton alumna. She is president of the Association of Black Princeton Alumni, and also serves on a number of boards and committees including the Leadership Council for the School of Engineering and Applied Sciences, and the National Board of the Princeton Prize in Race Relations. She remains connected to her passion for classical music and giving back in part through her service on the Board of Directors of Project Step, a classical music education program for underrepresented students in the greater Boston area.
Maharaj Mukherjee has a PhD in Computer and Systems Engineering from the Rensselaer Polytechnic Institute and a B-Tech in Electrical Engineering from the Indian Institute of Technology at Kharagpur. He has been working for IBM Research for seventeen years. Before that he served as a faculty at the Electrical and Electronics Communication Engineering at the Indian Institute of Technology at Kharagpur. Currently he works at the IBM's corporate IP team leading the Bigdata and Analytics project. He is also the chair of IBM's Smarter Planet Invention Development Team. He is also a member of IBM's Academy of Technology. His main areas of interest include: Geometric Algorithms and its applications within the fields of Big data and Analytics, Smarter Planet and Internet of Everything, CAD/CAM/CAE, and Electronic Design Automation. He has been twice selected as a Master Inventor at the IBM and is also inducted at the IBM's Inventor Wall of Fame at the IBM East Fishkill site in New York. He holds 44 US patent and 40 patents in other countries including, Germany, UK, France, Italy, China, Korea, Japan and Brasil. He also has several pending patents in US and other countries. One of his patents on Predictive Traffic Modeling has been chosen by IBM as one of the best twenty patents from past twenty years. Maharaj has monitored several new inventors who had filed for patents and patent applications. Maharaj has given several invited presentations including the Keynote presentation at the Computational Intelligence and Networking (CINE-2015) Conference in January 2015.
Co-managing partner Phil Colburn has transformed Cantor Colburn into one of the nation’s leading intellectual property law firms. Phil leads a team of more than 110 attorneys, patent agents, and technical advisors who are committed to helping clients optimize their IP assets through the timely delivery of top quality, cost-effective legal services.
His counsel to Fortune 50 multinationals, as well as smaller companies and universities, is informed both by unique technical insights gained from his years of professional experience as a design engineer and by strategic perspectives derived from more than 20 years’ practice as an IP attorney. Taking a proactive, results-driven approach allows him to help clients define their needs and implement strategies that achieve their objectives. A frequent speaker on IP issues, Phil is an Adjunct Professor of Patent Law at Western New England College School of Law.
Brian Foley is currently Vice President, General Counsel and a member of the Board of Directors of NeoStrata Company, Inc. NeoStrata, located in Princeton NJ, is a world leading innovator that develops and markets a comprehensive range of clinically-proven, dermatologist developed skin care products featuring unsurpassed technologies which include alpha and poly hydroxyacids and new amino acid sugars which can significantly improve the health and beauty of every skin type. NeoStrata was founded as a start-up company in 1988 by entrepreneurs Dr. Eugene Van Scott and Dr. Ruey Yu, world renowned leaders in dermatology and dermatopharmacology. The company was built on a proud medical heritage that includes decades of clinical research, an unprecedented amount of U.S. and foreign patents in the industry, and articles in major journals of dermatology. These advanced therapeutic and cosmetic dermatological products are available worldwide in over 80 countries through consumer outlets, physicians' offices and spas under the NeoStrata® and Exuviance® brand names. Mr. Foley is a 1984 cum laude graduate of New York Law School where he was a member of the law review, is currently a member of the bars of the states of New York, Connecticut, Florida, D.C. (inactive) and New Jersey (in-house counsel certification) and he has published scholarly articles in many legal papers and journals. Prior to joining NeoStrata, Mr. Foley was in private practice for 27 years, a partner in a New York based boutique law firm, a partner in New York based venture capital firms as well as an advisor to start-ups and emerging growth companies. The views expressed herein are those of Mr. Foley and not those of NeoStrata or any of its representatives.
Ian has over 25 years of experience spanning all areas of intellectual property practice. He is currently the IP Counsel for Nortek, Inc. a $2.8 billion global, diversified industrial company with a broad array of offerings which includes ventilation products such as range hoods and bathroom fans, security and audio/video solutions, heating and cooling products, air management systems, and ergonomic and productivity solutions. As the IP counsel with Nortek, Ian is responsible for all IP matters, for each of the business units including patents, trademarks, trade secrets and copyrights and all transactional matters. Ian is responsible for all IP litigation and has managed six suits in his first year with Nortek. Bringing three to a successful resolution for his clients. These cases include Federal District Court and ITC actions. In addition to managing all IP matters, Ian worked closely with the engineering teams to develop IP processes and strategies for the various product development projects within Nortek.
Prior to Ian's work at Nortek he was Counsel for IBM. He was one of the core members of the patent licensing and sales legal team responsible for generating IP income for IBM. In support of IBM's annual attainment of over $1B in IP income, this team focuses on the development and deployment of innovative patent monetization strategies, including managing creation and presentation of infringement and sales collateral.
Prior to moving to IBM, Ian was the Intellectual Property Counsel for UTC’s Research Center. Ian’s UTC responsibilities included the oversight of the IP law department for UTC’s Research and Development Center. While at UTC, Ian was instrumental in developing a process for the identification and protection of UTC’s cutting edge technology
Prior to his work with UTC Ian was an Assistant General Counsel with Honeywell where he was responsible for all Intellectual Property issues including Patent, Trademark, Copyright, Licensing, Transactional Matters, Advertising, Government Contracts and other legal services.
As IP counsel for IBM's Patent Portfolio Management Department, Tim is responsible for a team of senior attorneys who manage and develop IBM's worldwide patent holdings including over 55,000 patents worldwide. In this role Tim provides counsel on a wide variety of legal issues pertinent to the licensing, sales, acquisition and leveraging of IBM patents. Tim's department provides a critical connection between IBM's world renowned patent licensing organization and its robust inventor community and is integrally responsible for IBM's 21 consecutive years of US patent leadership.
Prior to assuming this role Tim held a number of key positions in IBM's IP department including serving as a founding member of IBM's IP strategy and policy department, and as a staff attorney for IBM's corporate patent licensing function. Tim has extensive experience in all aspects of corporate IP practice including patent prosecution, drafting and negotiating patent and technology license agreements, developing and executing patent assignments, formulating and advising clients on new IP monetization business models, as well as general IP related advices and counsel.
Before joining IBM, Mr. Farrell was in private practice in Salt Lake City, UT, holding positions at Workman, Nydegger as well as Snow, Christensen & Martineau.
Mr. Farrell holds a BS degree in Electrical and Computer Engineering from Brigham Young University (BYU), and MBA from the Mariott School of Management at BYU, and a JD from the J. Reuben Clark Law School at BYU. He is admitted to practice in California, Colorado, Utah and before the United States Patent and Trademark Office.
Joan McGillycuddy is Chief Intellectual Property Counsel at Avon Products Inc. Joan is a registered patent attorney with over 20 years of diverse intellectual property experience encompassing patent litigation, prosecution and transactional practice, as well as trademark and copyright matters. During her in-house career, Joan has had responsibility for all aspects of intellectual property and is also part of the Lead Attorney team for Mergers, Divestitures and Acquisitions in house. Before joining Avon, she held the positions of Senior Counsel – Patents at Akzo Nobel, Global IP Attorney at N.V. Organon and Global IP Lawyer at Organon (Ortho Pharmaceuticals), where she had the opportunity to work in the pharmaceutical patent group in the Netherlands. She began her legal career with the New York intellectual property litigation boutique, Hopgood Calimafde, which later merged with Morgan Lewis. Joan received her J.D. from Albany Law School of Union University and her undergraduate degree in Chemical Engineering from Manhattan College.
Jonathan Harris has 15 years of experience litigating high-stakes patent and trade secret matters, including matters with multi-million and billion dollar exposures. He has tried cases, and argued numerous contested proceedings, including hearings on claim construction and dispositive motions.
Jonathan concentrates his practice in the fields of biochemistry, mechanical engineering and computer software. His experience in life sciences and medical device patent litigation is particularly extensive. For example, he frequently leads litigation teams in complex Paragraph IV patent disputes, an area of focus for the past ten years.
Earlier in his career, Jonathan prepared and prosecuted patent applications in a variety of industries. He successfully argued appeals before the Board of Patent Appeals and Interferences, defended reexaminations and prosecuted interferences. His patent prosecution experience is a foundation for his litigation and counseling practice.
Outside the firm, Jonathan teaches a class on federal pretrial litigation at UCONN Law and tries cases for the Commission on Human Rights and Opportunities on a pro bono basis.
William Coppola has over 20 years of experience representing numerous clients, including universities, regarding a wide spectrum of patent and intellectual property matters. Mr. Coppola presently is a Senior Patent Counsel at Sanofi in Bridgewater, NJ. His responsibilities at Sanofi have included securing and defending world-wide patent protection, performance of due diligence with respect to new technologies, licensing and negotiation of agreements, performance of competitive and freedom-to-operate analyses, and patent litigation in the US and globally. Mr. Coppola’s litigation responsibilities have included management of numerous Hatch-Waxman litigations, ITC litigation, and PMNOC litigation in Canada.
Mr. Coppola received his J.D. from Seton Hall University Law School in 1991, where he was a member of the Seton Hall Constitutional Law Journal. He received his graduate degree in Biochemistry from the University of South Florida in Tampa, Florida, and his undergraduate degree in Chemistry from the University of Delaware. He is a member of the Phi Kappa Phi Honor society, a registered patent attorney, and is admitted to practice law in New Jersey and Florida.
Michelle Carniaux has experience in a broad range of intellectual
property matters including patent litigation, patent office post-grant
proceedings, rendering patent validity and infringement opinions, patent
portfolio analysis, counseling clients on patent strategy, and
supervising patent prosecution dockets. Ms. Carniaux’s work has
focused on computer (software and hardware), electronics, imaging,
telecommunications, and medical device technologies. She also has
extensive experience in connection with Internet, digital rights
management, and business method patents. Ms. Carniaux also authors
Kenyon’s IPR Blog (www.interpartesreviewblog.com), which covers the
latest developments in inter partes review (IPR) proceedings under the
America Invents Act (AIA).
Ms. Carniaux brings to Kenyon eight years of experience in the
computer field. At the Grumman Corporation, she developed software,
analyzed system performance and system failures, and gained
extensive operating systems experience as a Senior Systems
Programmer. While working at the Grumman Corporation, she obtained
her Master of Science degree in computer science.
Ms. Carniaux left Grumman in 1990 in order to attend Fordham
University School of Law. While a full-time student at Fordham, Ms.
Carniaux concurrently attended Polytechnic University, where she
successfully completed a variety of undergraduate and graduate
electrical engineering courses to complement her extensive computer
science background. Since joining Kenyon, Ms. Carniaux obtained her
Master of Science degree in electrical engineering.
David Bailey focuses his practice on all aspects of patent law, with a focus on inter partes reviews and post grant proceedings before the Patent Trial and Appeal Board (PTAB), and patent litigation. He has appeared before the PTAB on several occasions and has argued before the Federal Circuit, as well as led several inter partes and ex parte reexamination proceedings. David has also worked on trial teams representing a number of Fortune 500 technology companies in various technology areas, including the medical device and computer industries. Notably, he was a member of the trial team in Microsoft Corp v. AT&T Corp., decided by the Supreme Court. In addition, his practice includes client counseling, opinion drafting, patent portfolio management, licensing, and acquisition, in which he applies his focused legal knowledge to many technologies, including medical devices, chemical processing, pharmaceuticals, drug delivery compositions, and computer software. David is also co-leader of BakerHostetler’s Medical Device Group business team.
Prior to his legal career, David worked as an engineer for the PQ Corporation, a global producer of inorganic chemicals. He also teaches Patent Litigation at Villanova School of Law.
Marina F. Cunningham is a Managing Partner with McCormick, Paulding & Huber, an Intellectual Property firm with offices in Hartford, CT and Springfield, MA. Ms. Cunningham worked as a design supervisor for AT & T Bell Laboratories and, subsequent to obtaining her law degree, as an intellectual property attorney for United Technologies Corporation. She is admitted to practice before the State and Federal Courts of Connecticut and before the U.S. Patent & Trademark Office. Ms. Cunningham is the Chair of the Board of Directors for MIT Enterprise Forum of Connecticut. Ms. Cunningham is also Co-Chair of Technology and Intellectual Property Committee of the Hartford County Bar Association; Advisory Board Member for UCONN School of Law Intellectual Property Clinic; Committee member for INTA; and member of CPLA; AIPPI; and AIPLA. Ms. Cunningham has experience in domestic and foreign patent prosecution, trademark and copyright matters, e-commerce related issues, negotiation of licenses and other types of agreements relating to intellectual property, and litigation. Ms. Cunningham is fluent in Russian and Ukrainian.
Marina F. Cunningham holds a bachelor's degree in mechanical engineering from Columbia University and a master's degree from the Massachusetts Institute of Technology. She also holds a law degree from the University of Connecticut School of Law.
Dana Trexler Smith is a Partner in the Disputes and Investigations Group with 20 years of experience. She provides expert witness services in intellectual property and complex commercial disputes. Dana’s investigative accounting experience also includes assisting clients in post-acquisition disputes, fraud investigations, insurance claims and in performing contract compliance examinations. Dana has consulted for clients in many sectors, including software, pharmaceutical, biotechnology, medical device, manufacturing, high technology, financial services, and the service industry.
Regarding litigation and arbitration matters, Dana’s experience includes performing the assessment of damages in intellectual property disputes, the analysis of contract-related disputes, and the preparation and analysis of business interruption and property damage claims. She has evaluated and prepared economic damages including the projection of lost profits and reasonable royalty damages, and assessed incremental costs and cost allocation issues. In addition to her testimony experience in legal matters before the Court, Dana has also represented clients in Alternative Dispute Resolution proceedings and insurance claims negotiations and has significant experience in post-merger and acquisition disputes.
Prior to joining EisnerAmper, Dana was a Principal in the Forensic, Valuation and Litigation Services Practice of a regional accounting firm. Her background also includes 18 years at a Big Four firm where she was a Director in the Forensic Services Group and assisted clients in litigation and contract compliance matters, as well as helped to establish and lead the Corporate Intelligence practice. A frequent speaker, Dana has presented a range of forensic accounting and litigation topics to various professional organizations.
Dana received her B.S. in Accounting from Bucknell University and her M.B.A. from The Wharton School of the University of Pennsylvania. She is a member of the American Institute of Certified Public Accountants (AICPA), Pennsylvania Institute of Certified Public Accountants (PICPA), the American Bar Association (ABA), and Bucknell University Alumni Association of Philadelphia.
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Manages IP litigations, patent office proceedings,transactional IP matters, commercial litigation, and antitrust litigation. Advises on foreign patent matters. Manages outside counsel. Advises directly executive managemend at both Novo Nordisk Inc and Novo Nordisk A/S on issues relating to patents and is a key member of litigation steering groups that are chaired by Executive Vice Presidents and Officers of Novo Nordisk A/S.
Monique Forrest is a proud alumna of Spelman College and Vanderbilt University School of Law. Monique joined Beiersdorf as their first U.S. based attorney in 2011. Beiersdorf, headquartered in Germany, is an international beauty care and cosmetics company with over 20,000 employees worldwide. Some of Beiersdorf's global brands include Nivea, Eucerin, Aquaphor, and La Praire. Monique is responsible for managing the legal affairs and legal strategy for the U.S. affiliate. She manages contracts, intellectual property matters, advertising, litigation, outside counsel, compliance topics, and various other areas of law.
Prior to Beiersdorf, Monique worked for a fashion company where she handled licensing deals and numerous corporate law matters. In her spare time, she enjoys volunteering with local charities. She has combined her love of sports and fashion, and currently chairs Fashion Face-off; a unique couture fashion competition and charity event that is judged by professional athletes and fashion industry experts.
Jim Skippen is President and Chief Executive Officer of WiLAN and is a member of WiLAN’s Board of Directors. Since assuming this position in June 2006, Jim has led WiLAN’s licensing efforts, which have generated record revenues and patent licensing agreements with over 290 companies, including agreements with technology leaders Broadcom, Fujitsu, Intel, LG, Motorola Mobility, Nokia, Panasonic, BlackBerry and Samsung. A seasoned licensing executive, Jim has managed several large and complex patent licensing negotiations and litigations. Prior to joining WiLAN, he worked for two of Canada’s largest law firms and held a number of senior management positions, including Senior Vice-President, Patent Licensing and General Counsel at MOSAID Technologies. In his career, Jim has closed licensing deals worth in excess of 1.5 billion dollars.